Filing of Application for a Patent (Indian Patent Office)

“Lincoln said that the Patent Office adds the flame of interest to the light of creativity. And that is why we need to improve the effectiveness of our Patent Office”

Jay Inslee  

The patent office is the first line of patent information services in India. The office of the Controller general of Patents, Designs and Trademarks falls under the jurisdiction of Department of Industrial policy and Promotion, Ministry of Commerce and Industry.

Filing of patent application is the first step towards securing a protection for the invention proposed. The filing can be done either manually or online at the patent office of respective jurisdiction. The jurisdiction may be determined by the place of residence of the applicant, place of business of the applicant or the place of origin of the invention. The jurisdiction for filing at the moment within the purview of the Indian patent office is Kolkata, Delhi, Mumbai, and Chennai. The physical filing is done at the counter of the jurisdictional patent office. Electronic filing involves filing as per the online procedures prescribed by the Indian Patent Office. An inventor, either alone or jointly with others; inventor’s assignee; or Legal representative of any deceased inventor are eligible to file a patent application as prescribed by the Indian patents act, 1970.

Physical filing involves the submission of the list of requisite documents proposed by the Indian patent office. Any communication addressed to the patent office is to be accompanied by a covering letter enlisting the documents enclosed.

The Indian patent office has a set of prescribed forms for fulfilling each of the requirements for filing and otherwise. The set of prescribed forms for filing are primarily Form 1 and Form 2.

Form 1 is an Application for Grant of Patent in India which is in accordance with section 7, 54 & 135 and rule 20(1) of the Indian patents act, 1970. The form 1 accommodates the names of the inventors, the names of the applicants, title of the invention, address of correspondence of the applicant or the authorized patent agent in India, and any details of applications if filed in convention countries pertaining to the invention and particulars of divisional application and patent of addition if any and declaration by the applicants that they are confirming with the laws and rules cited by the Indian patents act, 1970.

The specification whether provisional or complete has been assigned a separate form by the Indian patent office as Form 2. This form is in accordance with section 10 and rule 13 cited by the Indian patents act, 1970. The contents of the form include: Title of the invention, name, address and nationality of the applicants, preamble of the description, the technical field under which the invention may be categorized, the background, brief summary, brief description of drawings, detailed description of the invention, the claims undersigned by the applicant along with the date, and finally the abstract. It is important for the applicant to sign the page containing the claims as the claims denote that part of the invention which the applicant or inventor seeks the protection for.

Also, the filing of patent application should be accompanied with corresponding drawings or depository material if any for better comprehension of the invention proposed to be protected. The deposition of the biological material should be within a prescribed time frame and with a designated depository authority. The Indian patent office has a prescribed fee which needs to be paid along with the submission of the forms as and where applicable. The fees for filing are different for an individual applicant, a small entity and a large entity.

In case the applicant and the inventor are different Form 5 may also be furnished at the time of filing. It is mandatory for an applicant filing in Indian Patent office to declare to the controller general of patents that there has not been a foreign filing with respect to the invention which has been proposed to be filed with the Indian Patent office. This is primarily keeping in mind the safety and security of the country. A request for examination may also be filed at the time of filing of the patent application or within 48 months of filing the specification.

Fling of an invention for patent ensures a sealing a date known as the priority date which is significant at the time of deciding the grant of patent. Introduction of e-filing has reduced the burden of paper on the Indian Patent office considerably. Also, the applicant need not go all the way to the office of jurisdiction to file one’s patent application. Mostly professional expertise is sought by the applicants as filing procedures are best comprehended by persons skilled in the art.  As India is moving ahead with innovation and with fringe benefits granted to start ups there has been significant escalation in the filing of patents thus indicating significant growth and economic development.

About This Author

Ms. S.L. Soujanya is a registered Patent agent with an academic background in Pharmaceutical sciences. She holds a Bachelor’s degree in Pharmacy from the Osmania University, Hyderabad and holds a Post Graduate Diploma in Intellectual Property Rights Law from NLSIU, Bangalore.

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